Protecting Trademark Rights in New Generic Top-Level Internet Domains

The list of generic top-level domains (gTLD’s), such as “.com” or “.edu,” has changed very little over the history of the internet, until recently. Between January and May of 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) accepted applications for new gTLD’s. It reportedly received more than two thousand applications, many of which may go live by the start of 2013, after review by ICANN. Trademark owners should be aware of their rights, in the event that someone else attempts to register an infringing gTLD.

ICANN recognizes several different types of top-level domains, and the most well-known, and widely available, TLD’s are the generic TLD’s. Seven original gTLD’s became available in the 1980’s, .com, .edu, .gov, .int, .mil, .net, and .org. Three of these, .com, .net, and .org, have been available to registrants with no restrictions. ICANN added new gTLD’s over the years, such as .biz, .info, and the recently-added .xxx, making a current total of twenty-two. In June 2011, ICANN took an unprecedented step of allowing applications for new gTLD’s beginning in 2012. The application process requires filing a complicated packet of materials and a non-refundable fee of $185,000 payable to ICANN.

Despite these prohibitive requirements, ICANN reports that it received more than two thousand applications during the application window from January 12 to May 30, 2012. It has published a list of all proposed gTLD’s with the identity of the applicant. Trademark owners have the burden of reviewing the list to check for possible infringement. An obvious concern is that an applicant may try to obtain a gTLD for a trademarked brand in violation of the owner’s rights. Many of the new proposed gTLD’s are non-trademarked or descriptive words, such as “.accountant” and “.school,” but some contain brands like “.youtube.” Others may be substantially similar to an existing trademark.

The Uniform Domain Name Dispute Resolution Policy (UDRP), which governs all domain name registrants and provides a procedure for resolving trademark disputes, will also govern disputes over gTLD’s. A trademark owner may submit a complaint to an administrative review process with an approved dispute resolution organization, which may award the domain name to the complainant. The UDRP only applies after a domain name is in use, however, so it may be inadequate in some situations for gTLD’s.

ICANN has also established procedures specific to the new gTLD application process. It operates a Trademark Clearinghouse, where trademark owners may submit data on their marks for later review by gTLD applicants. Trademark owners may submit a Legal Rights Objection to a pending application, to be reviewed by an “independent panel” of experts. The Uniform Rapid Suspension (URS) system allows emergency suspension of a clearly-infringing domain or gTLD during the registration process. Finally, trademark owners may use the Post Delegation Dispute Resolution Policy (PDDRP) if it believes that a registry’s use of a gTLD causes or “materially contribute[s] to trademark abuse.”

At the Law Offices of Salar Atrizadeh, we guide California businesses and individuals through the regulatory and transactional pitfalls of the internet, using legal knowledge and technological skill to create innovative solutions for our clients. Contact us today online or at (310) 694-3034 to set up a confidential consultation.